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High Court Of Delhi
HINDUSTAN PENCILS PRIVATE LIMITED - Appellant
Versus
INDIA STATIONERY PRODUCTS COMPANY - Respondent
Interim Application 2275 of 1988
Decided On : 01/23/1989
TRADEMARK - INFRINGEMENT - INTERIM INJUNCTION - DELAY - LACHES - ACQUIESCENCE - HONEST CONCURRENT USER - PUBLIC INTEREST - FRAUDULENT ADOPTION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - ADVERSE IMPACT ON CONSUMERS - PROTECTION OF THIRD PARTIES - GRANT OF INJUNCTION.
Fact of the Case:
Plaintiffs, proprietors of registered trademarks 'NATARAJ' and the device of Nataraj, filed a suit for perpetual injunction alleging infringement and sought rendition of accounts of profits against the defendants. An application under Order 39 Rules 1 and 2 was also filed for an interim injunction restraining the defendants from infringing the said mark. The defendants contended that there was an inordinate delay of more than six years in filing the suit and that they had been using the trademark since 1982. They also alleged that the plaintiffs had not used the trademark for paper pins and clips on a commercial scale prior to the defendants.
Finding of the Court:
The court held that the defendants' use of the mark was fraudulent as they had copied the plaintiffs' registered trademark and device, and had not indicated their name or address on the cartons, intending to mislead the public into believing that the products were manufactured by the plaintiffs. The court further held that the delay in filing the suit was not inordinate, considering that the plaintiffs had taken steps to protect their rights by filing an application for cancellation of the defendants' copyright registration in 1985 and filing the present suit within three years thereafter. The court also noted that the defendants had continued to use the infringing mark at their own peril after receiving notice of the plaintiffs' application for cancellation of copyright.
Issues: 1. Whether the plaintiffs were guilty of inordinate delay, laches, or acquiescence in seeking relief for trademark infringement. 2. Whether the defendants' use of the infringing mark was fraudulent. 3. Whether the balance of convenience and the potential irreparable injury to the plaintiffs and the public warranted the grant of an interim injunction.
Ratio Decidendi: 1. Inordinate delay, laches, and acquiescence are equitable defenses that may bar the grant of a permanent injunction, but they do not necessarily defeat a claim for an interim injunction, especially where the infringement is fraudulent. 2. Fraudulent adoption of a trademark involves the deliberate and dishonest use of another's mark with the intent to deceive the public and capitalize on the goodwill associated with the genuine mark. 3. In balancing the equities, the court must consider the potential irreparable injury to the plaintiff, the balance of convenience, and the public interest, including the protection of consumers from being misled by infringing products.
Final Decision: The court granted an interim injunction restraining the defendants from using the infringing mark and device until the final decision of the suit. The court held that the plaintiffs were entitled to the interim relief as they had established a strong prima facie case of trademark infringement and the defendants' conduct was fraudulent. The court also considered the potential irreparable injury to the plaintiffs and the public, and found that the balance of convenience favored the grant of an injunction.
( 1 ) THE plaintiffs have filed a suit for perpetual injunction alleging infringement of their registered trade mark and have also prayed for a decree for rendition of accounts of profits against the defendants. Along with this suit, an application under Order 39 Rules 1 and 2 has also been filed for an interim injunction against the defendants, for restraining them from infringing the said mark.
( 2 ) FACTS, relevant for the disposal of the application for injunction, may first be noticed. It is alleged by the plaintiffs that they are the proprietors of the following two registered trade marks :
" (A) Trade mark NATARAJ with the device of Nataraj under No. 260466 dated 6. 11. 1969 claiming user since 22. 2. 196j in respect of pencils, refills for propelling pens and pencils, pen sharp- ners, pens, fountainpeos, eraserspin, clips and stapples included in class 16. (b) Device of Nataraj under No. 283730 dated 27. 10. 1972 in respect of pencils all kinds, erasers, refills for propelling pens and pencils, pencil sharpners, pens, fountain pens, pins, clips, wire stapples for stappling presses and pins. "according to the plaintiffs, the aforesaid. marks were adopted by them in the year 1961 and after registration the same are still valid and subsisting in the register of Trade Marks. It is the case of the plaintiffs that they are incurring large expense of thousands of rupees by way of advertisement and the sale of their products under the trade mark of Nataraj is over eight crores. The plaintiffs have also placed on record copy. The certificate of their registered trade mark along with their registered label. Some of the labels and cartons bearing the said mark and advice are printed in red colour. One such label contains the name nataraj and also has the photograph of the dancing Nataraj, which is the advice which has been registered.
( 3 ) ACCORDING to the plaintiffs, in the middle of the year 1985 they got to know that the defendants ha4 surreptitiously got registered a copyright, with the Office of the Registrar of Copyright, a label similar to that of the plaintiffs in respect of pins. The defendants got this copyright in respect of pins under the name of Nataraj and a copy of the carton, which has been filed in Court, shows that the defendants have not only used the registered name of the plaintiffs, namely, Nataraj but have also used the device of the dancing Nataraj which is identical to the dancing figure which has been registered by the plaintiffs with the Registrar of Trade Marks.
( 4 ) IT is alleged by the plaintiffs that the conduct of the defendants is fraudulent inasmuch as they are using the trade mark and the device of Nataraj in respect of stationery pins even though the plaintiffs are the registered owners of the said trade mark and device. This alleged deliberate and dishonest act on the part of the defendants is stated to be causing a damage to the plaintiffs name, goodwill and business. According to the plaintiffs, pecuniary compensation will not afford them an adequate relief and if injunction is not granted, the plaintiffs will suffer irreparable loss and injury to the business, name, reputation and goodwill.
( 5 ) IT is further contended that after the plaintiffs go to know about the wrongful registration of the copyright by the defendants, they applied in June, 1985 with the Registrar of Copyright for rectification and cancellation of the defendants registration. The proceedings so intitiated are still stated to be pending before the Registrar of Copyright.
( 6 ) ON the basis of the allegations contained in the plaint and the application, supported by the documents placed on record, an ad interim ex parte injunction was granted, inter alia, restraining the defendants from manufacturing or selling pins and clips in the carton bearing the trade mark and device Nataraj of which trade mark and device the plaintiffs were the registered owners.
( 7 ) THE defendants filed their written statem
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